Banner & Witcoff |Intellectual ProPertyuPdate| fall/Winter 20146
assigning a proactive inventor to facilitate
the drafting of the application and to
collect all of the feedback from the inventors
greatly streamlines the review process.
Encouraging inventor participation in the
review process by shifting awards to patent
filings may also speed up review of draft
applications. Additionally, setting client-
imposed deadlines on outside counsel also
advances applications to filing.
Avoid Mission Creep
Avoiding mission creep, or shifting away from
the main objectives of inventions during
drafting, can help to reduce application
preparation time. Drafting robust descriptions
of the invention in patent applications
is important. However, when preparing
applications, it is easy to become carried
away and to list multiple examples that
expand beyond the original objectives of an
application. This can delay the ultimate filing
of the application and may also increase
drafting costs because attorneys will spend
more time preparing the application.Once an application is developed with
enough examples to broadly cover the key
inventive concepts, the application should
be filed. The additional inventive concepts
discussed that are not included with the filing
can be included in subsequent filings.CONCLUSION
With these additions to our patent
practitioner’s AIA toolbox, we are closer to
successfully filing quality patent applications
for clients in record time. Streamlining the
patenting process also offers the benefit of
reducing the cost per application by reducing
the drafting time, which results in cost savings
to companies. Moving forward, the impetus
is on us, as in-house counsel and outside
counsel, to keep our tools sharp. It is important
to revisit the patent application template
periodically (perhaps even quarterly) to keep it
from getting dull. As your company’s industry,
product offerings, and competitors change, so
should your template, checklist, and inventor
intake process. n[AIA toolbox, from Page 5]SAVe The DATe!
First GW Law Design Patent Symposium
Please save Friday, Nov. 21, 2014, for the
First GW Law Design Patent Symposium at
the GW Law School in Washington, D.C.The program will present and foster
debate on cutting edge design-related
topics. The program will be directed toward
an audience of design practice leaders
throughout the U.S.; however, we expect
that many others with an interest in
design law will also be in attendance.We expect corporate practitioners,
USPTO representatives, product designers,
professors and students to attend.
Friday, Nov. 21, 2014
All Day
GW Law School
2000 H Street NW
Washington, D.C. 20052
For more information, please contact
Chris Hummel at 202.826.3126
or [email protected].